Intellectual Property

The ability to protect intellectual property (“IP”) rights is often the key to maintaining competitive advantage in a changing marketplace. In today's information-based economy, a company's most valuable asset often is its intellectual property, whether patents, trademarks, copyrights, trade secrets, or the highly skilled minds that walk out the door each evening. The IP Group sees intellectual property as a "seamless web" in which the overriding goal must be the continuing and sustainable commercial success of the client in the marketplace and, if necessary, in the courthouse.

One of the most important criterion that determines the effectiveness of outside legal services is the ability of outside counsel to understand the client’s business. Gordon & Rees’s IP services are highly effective because many of our lawyers have served in in-house counsel positions before becoming private practitioners. We understand the unique nature of each client's IP requirements, and address those IP considerations on both a national and global scale.

Comprehensive IP Services

The IP Group assists clients in identifying, securing, asserting and defending all aspects of IP rights at home and abroad. We can also conduct IP audits and provide advice and counseling for strategies to maximize IP assets. In addition to the traditional IP components of patents, trademark and trade dress, and copyright, Gordon & Rees’s Intellectual Property Group is expert in trade secrets, internet-related issues, rights of privacy, and issues of unfair competition and antitrust as well as regulatory compliance. We are also highly experienced at negotiating and drafting development agreements, licenses, distribution, joint venture, strategic alliance, and vendor services agreements. We also have extensive experience crafting and implementing cost-efficient enforcement programs to protect IP rights including seizures, injunctions, anti-counterfeiting and gray market enforcement.

We regularly undertake prosecution and administrative proceedings before the Patent and Trademark Office, Copyright Office, and Trademark Trial and Appeal Board, as well as foreign bodies through correspondent counsel. More than half of our IP lawyers are admitted to practice before the USPTO, and our members include a former USPTO Examiner, adjunct professors and instructors of law, and a certified arbitrator and mediator with the International Trademark Association Panel of Neutrals and American Arbitration Association.

Dispute Resolution

Many litigators, especially those from large firms, seldom or never go to trial. Gordon & Rees is unusual in having a cadre of highly experienced IP lawyers who do. We are at home in the courtroom. We strive to resolve our client’s legal issues early on in a cost-effective manner, but where necessary we are not afraid to take a case to a jury, and have done so frequently and with great success. Our IP attorneys are distinguished in having a well-proven track record of jury trial experience with a deep bench of first-chair litigators, success in appellate practice, and mediation and arbitration experience in both state and federal courts, before the American Arbitration Association and international forums.

Global Reach

We are familiar with the interplay of trade agreements such as NAFTA, TRIPS (Trade-Related Intellectual Property Rights), and other international protocols on the enforcement of IP rights abroad and in the United States, (including service under the various Hague Conventions, and the enforcement of judgments under bilateral treaties), as well as efforts to harmonize IP rights worldwide, through the World Intellectual Property Organization (WIPO) and more specialized multilateral treaties. The IP Group members have IP prosecution experience and professional affiliations in numerous foreign jurisdictions, including the Pacific Rim, Canada, Latin America, and Europe, as well as various foreign language capabilities.

Industry Leadership

Lawyers in our Intellectual Property group are active members in numerous local, regional and national organizations that have a direct impact on the development and implementation of intellectual property laws and regulations around the world. Gordon & Rees lawyers have served as the Chair, co-Chair, and in various Board positions in the following organizations: AIPLA (American Intellectual Property Law Association), INTA (International Trademark Association), LES (Licensing Executives Society), Software Development Forum, Software and Internet Council, Intellectual Property Law Sections of the American Bar Association and many state bar associations, Defense Research Institute, San Diego Intellectual Property Law Association, American Chemical Society, and SofTECH, a high tech industry association.

Advanced Training

In addition to J.D.'s, lawyers in our Intellectual Property group have advanced science degrees and technical training, including Aerospace Engineering, Biochemistry, Biology, Biomedical Engineering, Cell-Molecular Biology and Genetics, Computer Engineering, Economics, Finance, Mechanical Engineering, Organic Chemistry, and Physics. A number of our IP lawyers have taught commercial and IP law as adjunct professors at various schools, including California Western School of Law in San Diego, Loyola Law School in Los Angeles, the University of San Diego, UCSD Extension, and Nova Southeastern University's Shepard Broad Law School in Florida.

Practice Chair served 10 years as the General Counsel of Lanard Toys, a U.S.-owned toy company headquartered in Hong Kong, responsible for legal affairs worldwide and management of U.S. design facility. He is admitted as a solicitor to the High Court of Hong Kong

Team includes lawyers with advanced science and technology degrees

Comprehensive IP protection and prosecution experience and professional affiliations in numerous foreign jurisdictions